## Facts

- Coach, Inc. manufactured and sold handbags, leather goods, and related accessories worldwide and owned numerous trademark registrations for COACH in the United States and many other countries.
- Coach operated the website coach.com and asserted significant online traffic and brand recognition associated with the COACH mark.
- Koko Island, LLC was a U.S. entity that raised capital to apply for new generic top-level domains (gTLDs) and to offer and administer domain names using those strings.
- Koko Island applied for hundreds of new gTLD strings, many of them common words, including the string “.coach.”
- ICANN’s New gTLD Program included a pre-delegation dispute process allowing trademark owners to file a Legal Rights Objection (LRO) against a gTLD application, with determinations issued under WIPO’s LRO rules and the ICANN New gTLD Dispute Resolution Procedure.
- Coach filed an LRO against Koko Island’s application for “.coach,” asserting that the string matched Coach’s COACH trademark and would harm Coach’s rights if delegated to a third party operating the TLD.
- A three-member WIPO panel was appointed to decide the objection under the LRO standards and factors set out in the ICANN Applicant Guidebook framework.
- After Koko Island filed its response, Coach attempted to submit a reply; the panel declined to admit the reply under the applicable procedure.

## Issues

1. Whether Coach proved, under the ICANN LRO standard, that Koko Island’s potential use of the “.coach” gTLD would take unfair advantage of, unjustifiably impair, or create an impermissible likelihood of confusion with Coach’s COACH trademark.
2. Whether the common dictionary meanings and widespread third-party uses of the word “coach,” together with Koko Island’s stated plan to run “.coach” as a general-use gTLD, defeated Coach’s objection despite the string’s identity to Coach’s mark.

## Decision

- The panel denied Coach’s Legal Rights Objection.
- The panel accepted that Coach held valid trademark rights in COACH and that the applied-for string “.coach” was identical to the COACH mark in appearance, sound, and meaning.
- The panel concluded that identity between the string and the trademark, by itself, did not satisfy the LRO standard.
- The panel found insufficient evidence that Koko Island applied for “.coach” to target Coach, trade on Coach’s reputation, or cause trademark-specific harm at the top-level string.
- The panel treated “coach” as a common dictionary word with multiple ordinary meanings and found that a proposed open, general-use “.coach” registry reduced the case for unfair advantage, unjustified impairment, or impermissible confusion at the gTLD level.
- The panel declined to accept Coach’s post-response reply and decided the merits based on the objection and response as permitted by the procedure.

## Legal Principles

- In an ICANN Legal Rights Objection, the objector bears the burden to show that the applied-for gTLD’s potential use is likely to: (i) take unfair advantage of the objector’s mark, (ii) unjustifiably impair the mark’s distinctiveness or reputation, or (iii) create an impermissible likelihood of confusion.
- The LRO analysis considers a set of factors drawn from ICANN’s Applicant Guidebook, including: similarity between the string and the mark; the strength and scope of the objector’s rights; the applicant’s stated purpose and preparations for use; any intent to create confusion; the existence of plausible good-faith uses; and the likely effect of the TLD’s operation on the objector’s rights.
- A string that is also a dictionary term with many non-trademark meanings may support a finding that the applicant has a legitimate basis to seek the string for general use, especially where the application fits a pattern of applying for common-word gTLDs.
- Proof that a string matches a trademark does not automatically establish unfair advantage, unjustified impairment, or impermissible confusion under the LRO framework; the objector must connect the gTLD’s likely operation to trademark-specific harm at the top-level.
- The absence of persuasive evidence of bad-faith targeting, together with a credible plan to operate the gTLD for ordinary uses consistent with the dictionary meaning of the string, weighs against sustaining an LRO.

## Conclusion

The WIPO panel held that Coach’s trademark rights in COACH, though significant, did not justify blocking Koko Island’s application for “.coach” where “coach” is a common word with many ordinary meanings and Coach did not prove that Koko Island’s operation of the gTLD would likely take unfair advantage of, unjustifiably impair, or cause impermissible confusion with Coach’s mark under the ICANN LRO criteria.


Coach, Inc. v. Koko Island, LLC Case No. LRO2013-0002 (2013)